Cowles Publishing Company, Publisher of The Spokesman-Review v. Birgit Klostermann
Claim Number: FA0510000572820
Complainant is Cowles Publishing Company, Publisher of The Spokesman-Review (“Complainant”), represented by Tracy N. LeRoy, of Witherspoon, Kelley, Davenport & Toole, P.S., 422 W. Riverside Avenue, Suite 1100, Spokane, WA 99201. Respondent is Birgit Klostermann (“Respondent”), P.O. Box No. 71826, KCPO, Central, 00000, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thespokesmanreview.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2005.
On October 6, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thespokesmanreview.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@thespokesmanreview.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thespokesmanreview.com> domain name is confusingly similar to Complainant’s THE SPOKESMAN-REVIEW mark.
2. Respondent does not have any rights or legitimate interests in the <thespokesmanreview.com> domain name.
3. Respondent registered and used the <thespokesmanreview.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, is a Washington Corporation with its principal place of business in Spokane, Washington. Complainant’s THE SPOKESMAN-REVIEW mark is used in association with a daily newspaper that circulates in the greater Spokane metropolitan area, Northern Idaho, and eastern Washington.
Complainant’s “The Spokesman Review” newspaper has been in continuous circulation for the past 106 years. Complainant’s mark appears in the printed content and advertisements represented within the newspaper and the online version of the newspaper, among other places. Complainant holds multiple domain name registrations containing Complainant’s THE SPOKESMAN-REVIEW mark, e.g. <spokesmanreview.com> and <spokesman.com>.
Respondent registered the <thespokesmanreview.com> domain name on October 21, 2003. The disputed domain name resolves to a website featuring links to third-party websites which are unrelated to Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has a long history of use which supports a finding of common law rights in THE SPOKESMAN-REVIEW mark. Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark and a showing of common law rights is sufficient. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”). Thus, the Panel finds that Complainant established common law rights in THE SPOKESMAN-REVIEW mark through its longstanding and continuous use of the mark in connection with its daily newspaper for over 106 years and is entitled to common law protection.
Complainant alleges that the disputed domain name, <thespokesmanreview.com>, is
confusingly similar to Complainant’s THE SPOKESMAN-REVIEW mark pursuant to
Policy ¶ 4(a)(i), as the domain name merely removes the hyphen from Complainant’s
mark. Such a change is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also
Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO
Sept. 18, 2000) (finding that removing a hyphen in the domain names is not
sufficient to differentiate the domain names from the mark).
Furthermore, the addition of the generic top-level domain “.com” is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <thespokesmanreview.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is not commonly known by the <thespokesmanreview.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant’s marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Furthermore, Respondent is using the <thespokesmanreview.com> domain name to operate a website
featuring commercial links to various third-party websites, through which
Respondent presumably receives referral fees.
Thus, the Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to divert Internet users to
third-party websites for Respondent’s own commercial gain does not constitute a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s
diversionary use of complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of
complainant, was not a bona fide
offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent receives click-through fees for diverting Internet users to its commercial websites. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the <thespokesmanreview.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thespokesmanreview.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 23, 2005
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